Kelly W. Cunningham

Before law school, Kelly Cunningham worked at the Aerospace Corporation in El Segundo for five years, where he had the opportunity to work in various departments, including fluid mechanics, orbital mechanics, systems engineering, material science laboratory and chemical physics laboratory.

"While in the fluid mechanics department, I met repeatedly with the company's in-house patent counsel and got to see his practice and was immediately fascinated with how he was tasked with learning about each of the company's most promising innovations, taking deep dives into each innovation and make decisions on which way the company should go," he explained.

Since then, Cunningham has amassed nearly 30 years of IP experience and currently advises clients in patent, copyright and trademark matters, including disputes and appeals throughout the country.

He has also worked with the U.S. House of Representatives Subcommittee on Intellectual Property Law and helped draft portions of the 2012 Leahy-Smith America Invents Act.

One of Cunningham's recent matters involves defense of a client in a trade dress infringement action in the Central District of California.

He successfully secured insurance coverage for their client and a major Fortune 100 retailer, which enabled a robust expert witness discovery process.

"This allowed us to maximize expert witness discovery and prove that such infringement theory required the incredible and rare scenario where potential customers of plaintiff saw the defendants' clothing out in public, and as a result, were confused into refusing to purchase plaintiff's clothing," Cunningham said.

He added the experts, therefore, understandably calculated that there were no articulable damages arising from such alleged infringement.

After expert discovery, Cunningham reached a settlement with the plaintiff that was very favorable to his own client, resulting in a settlement amount that was less than 1% of what the plaintiffs had originally demanded.

In a separate patent infringement action in the District of New Jersey, a competitor of Cunningham's client alleged infringement of three patents, plus two software copyrights, one trademark, a claim for alleging unfair competition, a claim to require reformation of contract, and even a claim for product disparagement.

"I commissioned patent invalidity searches and prepared petitions for inter parties patent review of each of the asserted patents, threatened to file them before approaching deadline, and the parties reached a favorable settlement of all claims in the action on the date of that deadline in which the entire action was dismissed with prejudice," he said.

And in discussing trends, Cunningham said the number and success of design patent infringement suits have seen a consistent upward trend since the very public U.S. Supreme Court's 2016 Samsung v. Apple decision.

"This decision, and its progeny, have caused a ripple effect, leading patent practitioners to assess and advise clients more often and more seriously on the value and potential of design patent protection," he said.